Trials@uspto.gov
`571-272-782
`
`
` Paper 16
`
`
`Entered: October 20, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ASSA ABLOY AB, ASSA ABLOY INC., ASSA ABLOY
`RESIDENTIAL GROUP, INC., AUGUST HOME, INC., HID GLOBAL
`CORPORATION, and ASSA ABLOY GLOBAL SOLUTIONS, INC.,
`Petitioners,
`
`v.
`CPC PATENT TECHNOLOGIES PTY LTD.,
`Patent Owner.
`
`IPR2022-01006 (Patent 9,665,705 B2)
`IPR2022-01045 (Patent 9,269,208 B2)
`IPR2022-01089 (Patent 9,269,208 B2)1
`____________
`
`
`Before SCOTT A. DANIELS, BARRY L. GROSSMAN, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`GROSSMAN, Administrative Patent Judge.
`
`
`ORDER
`Granting in Part the Joint Request for Additional Briefing
`37 C.F.R. § 42.5
`
`
`
`
`1 A copy of this Order will be entered in each case. The parties are not
`authorized to use this combined caption.
`
`
`571-272-782
`
`
` Paper 16
`
`
`Entered: October 20, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ASSA ABLOY AB, ASSA ABLOY INC., ASSA ABLOY
`RESIDENTIAL GROUP, INC., AUGUST HOME, INC., HID GLOBAL
`CORPORATION, and ASSA ABLOY GLOBAL SOLUTIONS, INC.,
`Petitioners,
`
`v.
`CPC PATENT TECHNOLOGIES PTY LTD.,
`Patent Owner.
`
`IPR2022-01006 (Patent 9,665,705 B2)
`IPR2022-01045 (Patent 9,269,208 B2)
`IPR2022-01089 (Patent 9,269,208 B2)1
`____________
`
`
`Before SCOTT A. DANIELS, BARRY L. GROSSMAN, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`GROSSMAN, Administrative Patent Judge.
`
`
`ORDER
`Granting in Part the Joint Request for Additional Briefing
`37 C.F.R. § 42.5
`
`
`
`
`1 A copy of this Order will be entered in each case. The parties are not
`authorized to use this combined caption.
`
`
`
`Case IPR2022-01006
`Patent 9,665,705 B2
`
`
`On October 18, 2022, the parties submitted by email a joint request
`for additional discovery and additional briefing “regarding the real part[y]-
`in-interest and privity issues raised in Patent Owner’s preliminary responses
`filed in IPR2022-01006, IPR2022-01045 and IPR2022-01089.” See
`Ex. 3001. The email also states “Patent Owner expects to raise substantially
`similar real party in interest and privity issues in its upcoming preliminary
`responses in IPR2022-01093 and IPR2022-01094, due November 4, 2022.”
`Id.
`
`No preliminary response has been filed in the 01093 and 01094 cases.
`Thus, we don’t know what defenses the Patent Owner actually will raise in
`those cases. We decline to speculate on the defenses that may be raised. We
`also decline to authorize in advance additional briefing based on the parties’
`speculations about the specific arguments and evidence that may arise.
`Accordingly, this Order applies only to the 01006, 01045, and 01089 IPR
`cases. After preliminary responses are filed in the 01093 and 01094 cases,
`the parties may contact the Board requesting additional discovery and/or
`briefing in those two cases, if deemed necessary.
`Additional Discovery
`The parties may agree, and apparently have agreed, to limited
`additional discovery. See 37 C.F.R. § 42.51(b)(2); see also Ex. 3001 (stating
`“Petitioner has agreed to respond to a limited set of discovery requests,
`which comprise one request for document production and five
`interrogatories.”). No further action by the Board is required at this time
`concerning the agreed additional discovery.
`
`2
`
`
`
`Case IPR2022-01006
`Patent 9,665,705 B2
`
`
`Upon obtaining the additional discovery, the parties may seek
`authorization to file supplemental information or to file motions for
`judgment based on the supplemental information. 37 C.F.R. § 42.123;
`Patent Trial and Appeal Board Consolidated Trial Practice Guide 75–76
`(Nov. 2019). 2
`
`Additional Briefing
`The parties’ proposed briefing schedule is unreasonable in the context
`of the December 6, 2022, due date for an opinion stating whether an IPR
`proceeding will, or will not, be instituted in the 01006 case. The decision
`due dates in the 01045 and 01089 cases are January 6, 2022. The proposed
`schedule could have the parties filing briefs into mid-November. Moreover,
`the parties have waited six weeks since the Preliminary Response in the
`01006 case to seek additional discovery and propose additional briefing.
`The Preliminary Response in the 01006 case was filed on September 6
`raising the real party-in-interest or privy issues and the potential statutory
`bar to the petition under 35 U.S.C. § 315(b) (“collectively the “RPI issues”).
`Moreover, the RPI issues were not minor, secondary issues in the
`Preliminary Responses. These issues are the only issues raised in the
`Preliminary Response.
`We have evidence in the existing record that there is a business
`relationship between Apple and Petitioners. See e.g., Ex. 2009 (the “Apple
`Developer Program License Agreement”). Thus, on the existing record we
`
`
`2 available at
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf.
`3
`
`
`
`Case IPR2022-01006
`Patent 9,665,705 B2
`
`can decide the issue presented by Patent Owner, without prejudice to
`allowing additional discovery to proceed.
`The parties’ joint email also states, “Petitioners are endeavoring to
`produce the requested documents as soon as possible but must first obtain
`Apple’s consent to do so, and first require the entry of a Protective Order in
`these proceedings. Therefore, the precise timing of the document production
`is somewhat uncertain but Petitioners are hopeful that it will occur within
`two weeks.” Ex. 3001 (emphasis added). Thus, there is a possibility that
`Apple may not consent to producing the documents at issue.
`“[W]here ‘a patent owner provides sufficient evidence that reasonably
`brings into question the accuracy of a petitioner’s identification of the real
`parties in interest, the burden remains with the petitioner to establish that it
`has complied with the statutory requirement to identify all the real parties in
`interest.’” Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018)
`(quoting Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2013-
`00453, Paper 88 (PTAB Jan. 6, 2015)). As further stated in Worlds, “there
`can be no doubt that the IPR petitioner bears the ultimate burden of
`persuasion to show that its petitions are not time-barred under § 315(b)
`based on a complaint served on an alleged real party in interest more than a
`year earlier.” Id. at 1242.
`Petitioner did not address in the Petition the RPI issue raised by Patent
`Owner in the Preliminary Response. We agree with the tenor of the parties’
`joint email request ((Ex. 3001) that obtaining Petitioner’s views on the RPI
`issue would be helpful. Accordingly, we authorize Petitioner to file on or
`before 5 p.m. (Eastern time) October 27, 2022, a brief not to exceed 10
`
`4
`
`
`
`Case IPR2022-01006
`Patent 9,665,705 B2
`
`pages in each of IPR2022-01006; 01045; and 01089 directed to the RPI
`issue raised in the Preliminary Response in each of the three listed cases. No
`other briefing is authorized at this time.
`It is so ORDERED.
`
`
`PETITIONER:
`
`Dion Bregman
`Andrew Devkar
`James Kritsas
`MORGAN, LEWIS & BOCKIUS LLP
`dion.bregman@morganlewis.com
`andrew.devkar@morganlewis.com
`james.kritsas@morganlewis.com
`
`PATENT OWNER:
`
`Andrew Ryan
`CANTOR COLBURN LLP
`ryan@cantorcolburn.com
`
`
`5
`
`
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